We use cookies to customise content for your subscription and for analytics.If you continue to browse Lexology, we will assume that you are happy to receive all our cookies. For further information please read our Cookie Policy.

What happens in the PTO stays in the PTO

The U.S. Court of Appeals for the Federal Circuit recently held that “improper revival” by the Patent and Trademark Office (PTO) of an abandoned patent application—absent allegations of inequitable conduct—does not constitute a defense to infringement or validity of an issued patent under 35 U.S.C. § 282. In other words, barring intentional misrepresentations, what goes on in the Patent Office with respect to revival, stays in the Patent Office. Aristocrat Technologies Australia Pty. Limited v. International Game Technology, Case No. 08-1016 (Fed. Cir., Sept. 22, 2008) (Linn, J.).

International Game Technology (IGT) sought summary judgment of invalidity based on improper revival, alleging that the PTO had revived Aristocrat’s application under the wrong statutory standard—“unintentional” rather than the “unavoidable” delay. The district court agreed with IGT that applications abandoned under 35 U.S.C. § 371 or § 133 could only be revived for unavoidable delay. The district court further held that improper revival of an abandoned application constitutes a defense to infringement under 35 U.S.C. §§ 282(2) and 282(4).

A unanimous panel of the Federal Circuit reversed, concluding that improper revival does not present “a cognizable defense in an action involving the validity or infringement of a patent.” The panel reasoned that improper revival falls into neither Section 282(2) nor 282(4) of the Patent Act. The propriety of revival falls outside of Section 282(2) because it does not constitute a “condition for patentability” as codified by Title 35 and interpreted by the Supreme Court in Graham v. John Deere. While there exist other requirements for a valid, enforceable patent, only sections 101, 102, and 103 constitute so-called “conditions for patentability.” The propriety of an application’s revival by the PTO is not among those conditions.

The panel further held that improper revival does not fit into § 282(4). The district court’s contrary finding overlooked “the fundamental requirement of the subsection—namely, that the act or fact is ‘made’ a defense by the title.” Omitting that requirement, the panel reasoned, would render §§ 282(1), (2), and (3) superfluous.

The panel found that §§ 371 and 133, unlike other provisions in the Patent Act, bear no sign of Congress’ intent to create a defense of invalidity or non-infringement. Rather than signaling Congress’ intent to provide a defense to accused infringers, the panel explained, §§ 371 and 133 merely spell out the circumstances that result in abandonment during prosecution and the circumstances for revival.

The panel reiterated that—absent inequitable conduct—“absolute compliance with the internal rules of patent examination becomes irrelevant after the patent has issued.”

Practice Note: The Federal Circuit’s decision has important ramifications for patent owners, shielding patentees from invalidity attacks based on prosecution irregularities. As the Court remarked, “[o]nce a patent has issued, the procedural minutiae of prosecution have little relevance to the metes and bounds of the patentee’s right to exclude.” A “deluge” of such arguments by accused infringers “relating to every minor transgression they could comb from the file wrapper,” the panel explained, “would only detract focus from the important legal issues to be resolved—primarily, infringement and validity.”

Related topic hubs

Compare jurisdictions: Arbitration

"I would like to thank the SCCA for this excellent service! The articles included in the newsfeeds are very useful and informative, and the user-friendly format of the newsfeeds means I can quickly glance over the précis in the emails to choose what to zoom in on."